Appeal No. 94-2895
Application 07/908,728
amount of a cold-water soluble hydrolysate as required by certain of the above noted
claims. However, the majority of Lenchin’s hydrolysate is unquestionably cold-water
insoluble (e.g., see lines 29 through 51 in column 5). Moreover, since patentee does not
disclose a desire to or mechanism for removing water soluble forms of the hydrolysate, a
reasonable basis exists for concluding that his hydrolysate inherently and necessarily must
contain at least some quantity in cold-water soluble form (which is all that is needed to
satisfy the claim requirement of “a minor amount”).
Where, as here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes, the Patent and
Trademark Office (PTO) can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product. Whether the
rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness”
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977).
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